Depending on the technology created, one or more of the following types of intellectual property could be used to protect the technology and used for licensing.
Patents are commonly used to protect inventions.
A patent provides the patent owner the right to exclude others from making, using, offering for sale, or selling the invention in the United States or importing the invention into the United States. For the patent owner to practice his/her own invention, that the patent owner may need to take a license from a third party who owns the background/dominating intellectual property.
Patents are regulated and protected by federal law (http://www.uspto.gov/patents/law/) and carry a term of about 20 years. On March 16, 2013, the United States joined the rest of the world as a first-to-file country instead of a first-to-invent country.
What Is Patentable?
An invention is patentable if it is novel and non-obvious. The burden of proof for showing it is not obvious is on the applicant. A patent is intended to publicly disclose the best mode of practicing an invention and as such, one cannot patent a secret. In the United States, patentable subject matter includes any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof. Laws of nature, mathematical formula, and abstract ideas are not patentable.
Public disclosure may preclude obtaining a patent on an invention. The United States allows a one year “grace period” to file after first public disclosure if the public disclosure is a written publication, but most foreign countries have no grace period. Even with the grace period, it is not guaranteed you can patent an invention you have disclosed since (1) the protection is limited for patenting previously disclosed information, and (2) somebody else can obtain the right to the patent by simply filing a patent application first. Papers published in a peer reviewed journal, conference abstracts, posters and presentations, and talking to third parties outside of your institution without a nondisclosure agreement are all examples of acts of public disclosure.
Please note, because of changes implemented by the America Invents Act, it is difficult to patent ideas after a public disclosure. If an inventor has publicly disclosed his invention prior to submitting a Patent Disclosure Form to our office, we will have to carefully evaluate the patentability of the invention and the practicality of filing a patent application to protect the invention.
Wright State’s Patent Decision Making Process
Not all Wright State inventions or intellectual property are patented since patenting is a business decision. If obtaining a patent does not provide the university or potential licensee a competitive advantage in commercializing an invention, then a patent will not be filed to protect the invention. Because the University pays for all of the costs associated with obtaining and maintaining patent protection, and because obtaining and maintaining patent protection for an invention is expensive, we need to be selective in our decision making process.
Inventorship is not the same as authorship in a scientific publication. The inventors are those who made a contribution to the final conception of the invention. Thus, people who actually constructed the invention may not be inventors, particularly if they did not contribute intellectual capital to the invention conception process. For example, people who contributed only routine labor or techniques are not considered inventors. However, a person who makes an improvement on an idea that did not work previously may be considered an inventor. Inventorship cannot be fully determined until claims are written in the patent application. Inventorship can change during prosecution as claims are changed, deleted, or added. Joint inventors have equal rights to the patent and the order in which the inventors are listed does not correlate with the amount of contribution.
Copyrights are generally used to protect works of authorship such as literary works, musical works, graphic works, and software. Copyright protects the expression of an idea but not the idea itself.
Copyright applies to “original works of authorship fixed in a tangible medium of expression.” Examples of copyrightable works include:
- Literary works, such as books, journal articles, poems, manuals, memoranda, tests, instructional material, databases, bibliographies;
- Computer software, which in addition to being copyrightable, may also be patentable;
- Musical works including any accompanying words;
- Dramatic works, including any accompanying music;
- Pictorial, graphic, and sculptural works, including photographs, diagrams, sketches, and integrated circuit masks; and
- Motion pictures and other audiovisual works such as videotapes; and sound recordings.
Copyright protection is governed by federal law and is automatic (i.e. registration not required). Copyright protects expression of the idea and not the underlying idea itself. The copyright owner is granted several exclusive rights, including the exclusive right to (1) reproduce the work (copy), (2) prepare derivative work (make improvements and modifications), (3) distribute copies of the work, and (4) perform or display the work publicly. Although copyright protection is automatic, Wright State may decide to obtain a copyright registration for your work of authorship because the registration may be necessary to effectively enforce the copyright.
Copyright Authorship and Ownership
Under copyright law, the creator of the original expression of the idea in a work is the author of the work. The author is also the owner of the copyrighted work unless he is under an obligation to assign the copyright to a third party. Authorship of a copyrighted work is not synonymous with inventorship of a patented invention. In copyright law, only those individuals who create the copyrighted work are authors: persons who provided an inventive contribution are not authors unless they actually made a physical contribution to the copyrighted work. However, in patent law those individuals who have made an inventive contribution without contributing to the physical derivation of the invention may still be listed as inventors on the patent application.
“Works made for hire” are special cases under copyright law where an employer is considered both the author and owner of the copyrighted work. A “work made for hire” is one that is 1) a work prepared by the employee within the scope of his/her employment; or 2) a work specially ordered or commissioned for use as a contribution to a collective work, as a part of a motion picture or other audiovisual work, as a translation, as a supplementary work, as a compilation, as an instructional text, as a test, as answer material for a test, or as an atlas, if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire. Some of the works created at the University are works made for hire.
Research Materials are products that are not patented or otherwise protected but have value in the market place.
Research Materials are products that are not patented or otherwise protected but have value in the market place. They can include biological materials, methods, software, databases, and data. Some research materials are referred to as know-how and they can be difficult and/or expensive to create. As such, it is easier for companies to request for a license to legally gain access to the research materials / know how in exchange for royalty payments.
Royalty received by the university from licensing of university’s intellectual property will be distributed according to the Royalty Distribution Schedule in the IP Policy. This distribution method does not apply to equity.
Inventors or authors have an option as to how the royalty received by the university is distributed:
Option A. Deposit all net royalties into a restricted (ledger 6) account.
Net royalties are defined as gross royalty income less actual expenses incurred by the University in administration of the intellectual property, including but not restricted to legal fees and patent maintenance fees. Such restricted (ledger 6) accounts will be assessed a fee of 10% on all royalty income received.
For example, for $200,000 cumulative gross royalties, with $40,000 cumulative expenses, the total ledger 6 budget shall be .9 x ($200,000 - $40,000) = $144,000.
Option B. Receive personal income based upon gross royalties.
For gross royalties up to $50,000, the inventor’s/author’s share shall be one-half of gross royalty income. For gross royalties in excess of $50,000, the inventor’s/author’s share shall be 40% of the excess above $50,000 minus any expenses in excess of $25,000.
For example, for $200,000 cumulative gross royalties, with $40,000 cumulative expenses, the total inventor’s/author’s share shall be 0.5 x $50,000 + 0.4 x [($200,000 - $50,000) - ($40,000 - $25,000)] = $79,000
Ownership of Intellectual Property (IP) created at the University is determined by federal law, state law, University’s IP Policy, and by contract. See more.
Ownership of Intellectual Property (IP) created at the University is determined by federal law, state law, the University’s IP Policy, and by contract.
The federal Bayh-Dole Act allows the University to elect title to inventions created or developed using federal funding, such as from the National Institute of Health (NIH), the National Science Foundation (NSF), and the Department of Defense (DoD). This right exists regardless of whether the University [received the funding directly from the federal government or indirectly through a company. In fact, “[i]t is Government policy that contractors shall not use their ability to award subcontracts as economic leverage to acquire rights for themselves in inventions resulting from subcontracts.” For inventions where the University does not elect title, the inventions may be owned by the federal government.
Ohio Revised Code 3345.14 (http://codes.ohio.gov/orc/3345.14) specifies that state colleges and universities in Ohio own all rights and interests in discoveries, inventions, or patents resulting from work performed in any facility at the state college or university, or by employees of the state college or university acting within the scope of their employment, or with funding, equipment, or infrastructure provided by any state college or university.
Wright State University has an IP policy that explains what IP the university owns and controls. If you have questions about invention ownership, please contact us.